DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s amendment and response filed on 2/3/2026 has been received and entered into the case.
Claims 5, 17 and 19 have been canceled, claims 8-16 and 18 have been withdrawn from consideration as being drawn to non-elected subject matter, and claims 1-4, 6-7 and 20 have been considered on the merits. All arguments have been considered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4, 6 and 20 stand rejected under 35 U.S.C. 103 as being unpatentable over O’Dwyer (of record) in view of Cacalano et al. (2016, Frontiers in Immunology; IDS ref.), Mohr et al. (2016, FEBS Journal; of record), Croker et al. (2003, Nature Immunology; of record) and Daher et al. (US 2021/0230548; of record) as evidenced by Jacobi et al. (of record).
O’Dwyer teach a method of producing engineered natural killer cells modified to increase its cytotoxicity (para. 24), and the genetic modification can be a stable knockout of a gene by CRISPR or a transient knockdown of a gene by siRNA (para. 85). O’Dwyer teaches Cas9 RNP transfection via electroporation (paras. 185-191). O’Dwyer teach the use of Cas9 RNP which has significantly lower toxicity compared to using the DNA plasmids of CRISPR/Cas9, and this Cas9 RNP involves crRNA mixed together with t[racr]RNA (i.e. tracerRNA: it is understood that “tRNA” in para. 187 appears a typo as a gRNA in the RNP complex is known to comprise crRNA and tracrRNA according to Jacobi et al. See Fig.2) and Cas9, and then the cells are electroporated with Cas9 RNP (para. 187-191). This process using Cas9 RNP meets the claimed steps.
It is noted that O’Dwyer does not particularly disclose that the NK cells are primary NK cells. However, the NK cells taught by O’Dwyer would inherently be primary NK cells as O’Dwyer teach “NK cell” or NK cell line for the genetic modification to increase its cytotoxicity (para. 52). As the source of modified NK cells is either NK cell or NK cell line according to O’Dwyer, the “NK cell” should be understood as a primary NK cell opposed to the “NK cell line”.
O’Dwyer does not teach that the gRNA targeting exon 2 of SOCS3 gene, and the modified primary NK cells comprises a knockout of SOCS3.
Cacalano et al. teach that siRNA targeting SOCS3 resulted in increased STAT3 phosphorylation and NK-mediated killing of tumor targets, suggesting that SOCS3 is a negative regulator of NK activity and therapeutic targeting of SOCS3 in NK cells may potentiate killing of tumor targets (p.12, 1st col., 2nd full para.).
It would have been obvious to a person skilled in the art to modify NK cells of O’Dwyer to knockout the SOCS3 gene in the primary NK cells. A person of ordinary skilled in the art would have been motivated to do so because Cacalano et al. teach the silencing or knockout of SOCS3 gene increased NK activity in killing tumor targets. As O’Dwyer teach the modification of NK cells is intended to increase NK cell cytotoxicity (para. 24), one skilled in the art would recognize that the knockout of SOCS3 gene taught by Cacalano et al. could be used for the same purpose of increasing NK cell cytotoxicity.
Regarding exon 2 of SOSC3 gene being targeted by CRISPR, Cacalano et al. do not particularly teach the limitation.
However, it would have been obvious to a person skilled in the art to choose exon 2 of SOSC3 as a target for gRNA for CRISPR in order to knockout SOSC3 for the method of O’Dwyer. A person of ordinary skilled in the art would have been motivated to do so because Mohr et al. teach that gRNA for CRISPR technology can target sites such as within 500-50 bp of the transcription start site, nearby the transcription start site, in a common coding exon, or within a specific exon, intron, protein domain-encoding sequence, or other (p.3234, 2nd col.). As exon 2 of SOSC3 gene comprises the transcription start site of the coding exon according to Croker et al. (see Fig. 1a), one skilled in the art would recognize that exon 2 of SOSC3 gene can be used as target sites of gRNA in the CRISPR technology for knockout of SOSC3 gene in the method of O’Dwyer in view of Cacalano et al. with a reasonable expectation of success.
Regarding the gRNA comprising any of SEQ ID NO:62 or 64, O’Dwyer in view of Cacalano et al. and Mohr et al. do not teach the limitation.
However, it would have been obvious to a person skilled in the art to arrive the SEQ ID NO:62 or 64 of the claims by designing gRNAs targeting exon 2 of SOSC3 gene based on the CRISPR technology as Mohr et al. teach any target sites within 500-50 bp of the transcription start site, nearby the transcription start site, in a common coding exon, or within a specific exon, intron, protein domain-encoding sequence, or other (p.3234, 2nd col.). As discussed above, the exon 2 of SOSC3 is the coding exon of SOSC3 gene according to Croker et al., one skilled in the art would be able to design gRNAs using any gRNA sequence targeting any region of the coding exon 2 of SOSC3 with a reasonable expectation of success. While the cited references do not particularly disclose the specific sequence of NO: 62 or 64, these two sequences are located in the coding sequence of the exon2, and thus, it would have been obvious to a person skilled in the art to select these sequences among various possible sequences in the absence of evidence to the contrary or any unexpected results.
Regarding the primary NK cell being incubated for 2-4 days in the presence of IL-2 prior to electroporation (claim 1), expanding for 4 days in the presence of irradiated feeder cells prior to electroporation (claim 1 and 3), or a step of expanding modified NK cells with irradiated mbIL-21 expressing feeder cells following electroporation (claim 6) O’Dwyer in view of Cacalano et al. fails to teach the limitations.
Daher et al. teach that primary NK cells obtained from cord blood (CB-NK cells) can be expanded for 2-30 days in the presence of APCs (feeder cells) as well as IL-2 (para. 66). Daher et al. teach that NK cells isolated from cord blood are expanded and cocultured with irradiated APCs with IL-2 on Day 1 (para. 253). The expanded NK cells were selected and CAR transduction was performed on Day 5 (para. 254), and then the CAR NK cells were expanded in the presence of IL-2, and on Day 14, CRISPR Cas9 was used for CISH KO in CAR NK cells using electroporation (para. 256), and then the electroporated CAR NK cells were co-cultured with irradiated APCs with IL-2 (para. 257). Daher et al. teach that the feeder cells, i.e. APC cells are engineered to express membrane-bound interleukin-21 (mbIL-21) (para. 13; p.34, 2nd col., claim 23).
Thus, it would have been obvious to a person skilled in the art to modify the duration of expansion of primary NK cells within the known range (i.e. 2-30 days) in the presence of IL-2 as well as APC (irradiated feeder cells) as taught by Daher et al. for the method of O’Dwyer in view of Cacalano et al. with a reasonable expectation of success. It would have been obvious to a person skilled in the art to use the irradiated feeder cells as the expansion of the NK cells in the presence of the feeder and IL-2 would be prior to the electroporation as well as after the electroporation as taught by in the method of O’Dwyer in view of Cacalano et al.
Regarding the step (c) of claim 1 directed to the step of resting the modified primary NK cell for 48 hours after electroporation in a culture medium supplemented with human IL-2, and then expanding the cell using an irradiated feeder cells, O’Dwyer in view of Cacalano et al., Mohr et al. and Daher et al. do not teach the limitation.
Rautela et al. teach that primary human NK cells are electroporated with Cas9-RNP complexes targeting NCR1 or CISH, and the cells are allowed to recover [from electroporation] and expand for 5 days after electroporation in media containing IL-15 (p.5, Application of Cas9-RNP system). Rautela et al. also teach HSC cells are electroporated and then returned to culture for a further 2 days to recover after electroporation (p.7, Humanized mice)
Thus, it would have been obvious to a person skilled in the art to rest the primary NK cells electroporated with Cas9-RNP to knockout SOSC3 gene for 48 hours after electroporation to recover the cells based on the teachings of Rautela et al. in the culture medium taught by O’Dwyer, i.e. growth medium for NK cells comprising IL-2 and IL-15 (para. 195) with a reasonable expectation of success.
Regarding claim 2, the method of O’Dwyer in view of Cacalano et al. utilizing Cas9 RNP would knock out SOCS3 gene, and this is considered to meet the limitation of claim 2 (i.e. deletion of an endogenous DNA fragment).
Regarding claims 3-4 directed to the irradiated feeder cells comprising membrane bound 41BBL and IL-21 (claims 3-4), O’Dwyer in view of Cacalano et al. do not teach the limitations.
Daher et al. teach that the feeder cells, i.e. APC cells are engineered to express 41BB and IL-21, or uAPCs are engineered to express membrane-bound interleukin-21 (mbIL-21) and 41BB ligand (41BBL) (para. 13; p.34, 2nd col., claim 23).
Therefore, it is known in the art that expansion of NK cells following CRISPR Cas9 electroporation is carried out in the presence of irradiated APCs and IL-2 according to Daher et al. As Daher et al. exemplify mbIL-21 and 41BBL expressing feeder cells, one skilled in the art would recognize that mbIL-21 and 41BBL expressing feeder cells are suitable feeder cells for NK cell expansion. Thus, it would have been obvious to a person skilled in the art to expand genetically modified NK cells in the presence of APCs such as mbIL-21 and 41BBL expressing feeder cells with a reasonable expectation of success. Thus, replacing the feeder cells taught by O’Dwyer with genetically modified feeder cells expressing mbIL-21 is expected to improve ex vivo expansion of NK cells, and thus, it would take less time for obtaining NK cells desired for the genetic manipulation using cas9/RNP in the method of O’Dwyer in view of Cacalano et al.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention.
Claim(s) 7 stands rejected under 35 U.S.C. 103 as being unpatentable over O’Dwyer in view of Cacalano et al., Mohr et al., Croker et al. and Daher et al. as applied to claims 1-4, 6 and 20 above, and in further view of Jacobi et al. (of record).
Regarding claim 7 directed to the RNP complex formed by diluting 36 mM cas9 into a solution of 200 mM crRNA and TracerRNA, O’Dwyer teach the use of cas9/RNP and the Cas9 is mixed with crRNA and tRNA but fails to teach the specific molarity as claimed. It is noted that the limitation is interpreted the final concentration of cas9 in the RNP complex being 36 mM by diluting cas9 in 200 mM crRNA and TracerRNA.
However, it would have been obvious to a person skilled in the art to modify the concentration of cas9 concentration as it is mixed with crRNA/trRNA. One skilled in the art would recognize that the concentrations of cas9 and crRNA/trRNA for the method of O’Dwyer would be result-effective parameters readily optimizable by routine experimentation. In the absence of any evidence that the concentration of cas9 (36 mM) or crRNA and TracerRNA (200 mM) as claimed is critical or provides unexpected results, it is the examiner’s position that modification of the concentrations for cas9 and crRNA/TracerRNA is within the purview of a person skilled in the art.
Furthermore, Jacobi et al. teach a simplified tool for genome editing using CRISPR/Cas9 system, and teach that working dilution for Cas9 is 36 mM using a stock (61 mM) (p.19, 2nd col., Step #10). Thus, it would have been obvious to a person skilled in the art to use the final concentration of cas9 at 36 mM based on the teaching of Jacobi et al.
One skilled in the art would recognize that the dilution of the stock solution (i.e. cas9 stock) can be carried out by using other ingredients (i.e. gRNA which is a combination of crRNA and tracerRNA) and/or carriers (e.g. PBS/buffer/etc.) for the final working concentration. Thus, it is within purview of a skilled artisan that the stock concentration of each ingredients for the final concentration can be readily modified as desired.
Regarding the recovery in the medium comprising IL-2, and then expanding using irradiated feeder cells after 48 hours of recovery (claim 20), O’Dwyer teaches that the NK cells are electroporated with Cas9 RNP, and the electroporated cells are transferred to one well of a 12-well plate containing growth medium including IL-2 (paras. 187-195), and then the cells are harvested after 48-72 hours to confirm gene editing efficiency (para. 196). Daher et al. teach the pre-cultivation of NK cells in the presence of IL-2, electroporation and then expansion in the presence of IL-2 and irradiated feeder cells. Thus, it would have been obvious to a person skilled in the art to recover the electroporated cells in the medium used for prior to the electroporation (i.e. a medium comprising IL-2) and then the recovered cells are expanded in the presence of both IL-2 and irradiated feeder cells with a reasonable expectation of success.
Therefore, the invention as a whole would have been prima facie obvious to a person of ordinary skill before the effective filing date of the claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-7 and 20 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-15 of copending Application No. 17/773755 in view of O’Dwyer (supra), Cacalano et al. (supra), Croker et al. (supra), Mohr et al. (supra), Daher et al. (supra) and Jacobi et al. (supra). The claims of the ‘755 application disclose a method comprising steps of obtaining a target NK cells and modifying the NK cell using CRISPR/Cas9 using gRNA and a RNP complex to hybridize to a target sequence within the genomic DNA of the target NK cell to create an engineered NK cells, and the CRIPSR/Cas9 is introduced to the NK cell by electroporation (claim 9).
The claims of the ‘755 application do not disclose knockout of SOCS3 gene targeting exon 2 of the gene using gRNA.
Cacalano et al. teach that siRNA targeting SOCS3 resulted in increased STAT3 phosphorylation and NK-mediated killing of tumor targets, suggesting that SOCS3 is a negative regulator of NK activity and therapeutic targeting of SOCS3 in NK cells may potentiate killing of tumor targets (p.12, 1st col., 2nd full para.).
It would have been obvious to a person skilled in the art to modify NK cells of the ‘755 application to knockout the SOCS3 gene in the NK cells. A person of ordinary skilled in the art would have been motivated to do so because Cacalano et al. teach the silencing or knockout of SOCS3 gene increased NK activity in killing tumor targets. As the claims of the ‘755 application disclose that the subject in need of the engineered NK cells has a cancer (claim 10), one skilled in the art would recognize that the knockout of SOCS3 gene taught by Cacalano et al. could be used for the purpose of treating the subject having cancer.
Regarding exon 2 of SOSC3 gene being targeted by CRISPR, it would have been obvious to a person skilled in the art to choose exon 2 of SOSC3 as a target for gRNA for CRISPR in order to knockout SOSC3 for the method of the ‘755 application in view of Cacalano et al. A person of ordinary skilled in the art would have been motivated to do so because Mohr et al. teach that gRNA for CRISPR technology can target sites such as within 500-50 bp of the transcription start site, nearby the transcription start site, in a common coding exon, or within a specific exon, intron, protein domain-encoding sequence, or other (p.3234, 2nd col.). As exon 2 of SOSC3 gene comprises the transcription start site of the coding exon according to Croker et al. (see Fig. 1a), one skilled in the art would recognize that exon 2 of SOSC3 gene can be used as target sites of gRNA in the CRISPR technology for knockout of SOSC3 gene in the method of the ‘755 application in view of Cacalano et al. with a reasonable expectation of success.
Regarding the limitation directed to the gRNA comprising any of SEQ ID NO:62 or 64, the claims of the ‘755 application in view of the cited references above do not teach the limitation. However, it would have been obvious to a person skilled in the art to arrive the SEQ ID NO:62 or 64 of the claims by designing gRNAs targeting exon 2 of SOSC3 gene based on the CRISPR technology as Mohr et al. teach any target sites within 500-50 bp of the transcription start site, nearby the transcription start site, in a common coding exon, or within a specific exon, intron, protein domain-encoding sequence, or other (p.3234, 2nd col.). As discussed above, the exon 2 of SOSC3 is the coding exon of SOSC3 gene according to Croker et al., one skilled in the art would be able to design gRNAs using any gRNA sequence targeting any region of the coding exon 2 of SOSC3 with a reasonable expectation of success. While the cited references do not particularly disclose the specific sequence of NO: 62 or 64, it would have been obvious to a person skilled in the art to select these sequences among various possible sequences of exon 2 of SOSC3 as discussed above.
Regarding claim 2, the genetic modification mediated by CRISPR/Cas9 RNP complex of the ‘755 application in view of Cacalano et al. for knockout of SOCS3 gene is considered to the deletion of the endogenous DNA (i.e. SOCS3).
Regarding claim 3, claim 14 of the ‘755 application discloses expansion of primary NK cells and also the use of irradiated mbIL-21 expressing feeder cells (RE: claims 5-6).
Regarding the NK cells being a primary cell, claim 11 of the ‘755 application disclose that the NK cell is a primary NK cell.
While claims of the ‘755 application do not disclose the use of IL-2 or irradiated feeder cells for 4 days during the expansion of NK cells prior to the electroporation, or using irradiated feeder being 41BBL and IL-21 or mbIL-21 expressing feeder cells after electroporation, however, the use of IL-2 and feeder cells in the expansion of NK cells prior to and after electroporation is well known in the art according to Daher et al. Daher et al. teach that the feeder cells, i.e. APC cells are engineered to express 41BB and IL-21, or uAPCs are engineered to express membrane-bound interleukin-21 (mbIL-21) and 41BB ligand (41BBL) (para. 13; p.34, 2nd col., claim 23). Therefore, it is known in the art that expansion of NK cells following CRISPR Cas9 electroporation is carried out in the presence of irradiated APCs and IL-2 according to Daher et al. As Daher et al. exemplify mbIL-21 and 41BBL expressing feeder cells, one skilled in the art would recognize that mbIL-21 and 41BBL expressing feeder cells are suitable feeder cells for NK cell expansion. Thus, it would have been obvious to a person skilled in the art to expand genetically modified NK cells in the presence of APCs such as mbIL-21 and 41BBL expressing feeder cells for the method of the ‘755 application with a reasonable expectation of success.
Regarding claim 7 of the instant application, it is known in the art that the genetic manipulation or genome editing can be carried out by using cas9/RNP and the RNP complex is mixed with crRNA and tracerRNA according to O’Dwyer (para. 185-191). However, the claims of the ‘755 application in view of O’Dwyer do not teach the concentrations of cas9 and the mixture of crRNA/trRNA of claim 7 for diluting cas9 to 36 mM. It would have been obvious to a person skilled in the art to modify the concentration of Cas9 by using a solution of crRNA and tracerRNA as desired. One skilled in the art would recognize that the concentrations of cas9 and crRNA/trRNA for the claims of the ‘755 application would be result-effective parameters readily optimizable by routine experimentation. In the absence of any evidence that the concentration of cas9 (36 mM) or crRNA and TracerRNA (200 mM) as claimed is critical or provides unexpected results, it is the examiner’s position that modification of the concentrations for cas9 and crRNA/TracerRNA is within the purview of a person skilled in the art. Furthermore, Jacobi et al. teach that working dilution for Cas9 is 36 mM diluted from a stock (61 mM) by mixing with gRNA complex (100 mM) (p.19, 2nd col., Step #10). Thus, it would have been obvious to a person skilled in the art to use the final concentration of cas9 at 36 mM based on the teaching of Jacobi et al. One skilled in the art would recognize that the dilution of the stock solution (i.e. cas9 stock) can be carried out by using other ingredients (i.e. gRNA which is a combination of crRNA and tracerRNA) and/or carriers (e.g. PBS/buffer/etc.) at any desired concentrations for the final working concentration. The stock concentration of each ingredients for the final concentration can be readily modified as desired.
Regarding claim 20, the claims of the ‘755 application do not particularly teach a step of resting the modified primary NK cell for 48 hours after electroporation in a culture medium supplemented with human IL-2.
O’Dwyer teaches that the NK cells are electroporated with Cas9 RNP, and the electroporated cells are transferred to one well of a 12-well plate containing growth medium including IL-2 (paras. 187-195), and then the cells are harvested after 48-72 hours to confirm gene editing efficiency (para. 196).
Rautela et al. teach that primary human NK cells are electroporated with Cas9-RNP complexes targeting NCR1 or CISH, and the cells are allowed to recover [from electroporation] and expand for 5 days after electroporation in media containing IL-15 (p.5, Application of Cas9-RNP system). Rautela et al. also teach HSC cells are electroporated and then returned to culture for a further 2 days to recover after electroporation (p.7, Humanized mice)
Thus, it would have been obvious to a person skilled in the art to rest the primary NK cells electroporated with Cas9-RNP to knockout SOSC3 gene for 48 hours after electroporation to recover the cells based on the teachings of Rautela et al. in the culture medium taught by O’Dwyer, i.e. growth medium for NK cells comprising IL-2 and IL-15 (para. 195) for the method of the ‘755 application with a reasonable expectation of success.
Regarding the use of irradiated feeder cells in the expanding step (c) of claim 1, this limitation is considered the same as claim 6. As discussed above, the use of feeder cells such as irradiated mbIL-21 after electroporation is obvious based on the teaching of Daher et al. Thus, it would have been obvious to a person skilled in the art to rest the NK cells after electroporation for 2 days, and expand the cells in the presence of feeder cells with a reasonable expectation of success.
Therefore, the claims of the ‘755 application in view of the references cited above render the instant claims obvious.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
The 1.132 Declaration
The declaration under 37 CFR 1.132 filed 2/3/2026 is insufficient to overcome the rejection of claims 1-4, 6-7 and 20 based upon O’Dwyer as set forth in the last Office action:
The declaration stated “despite O'Dwyer's generic disclosure of genetically modifying a NK cell (which I understand the Office has interpreted as a primary NK cell) or NK cell line, I would not expect that the method of O'Dwyer could be applied to a primary NK cell as the Office has alleged, nor do I believe that O'Dwyer intended to refer to a primary NK cell in this generic disclosure based on this expectation.” It appears that the reason for Dr. Lee’s conclusion is based on the alleged “difficulty” in genetic manipulation as stated in #5, p.2.
The declaration stated (p.2) that genetic modification of NK cells is uniquely difficult due to the induction of procedure-associated NK cell apoptosis caused by the capping, tailing, and other transcriptional and translational processes started by RNA polymerase II, and a primary aim of the Application is circumventing procedure-associated NK cell apoptosis in order to genetically modify NK cells to be more cytotoxic, which is significantly more challenging to do in NK cells than in most other cell types. The declaration stated that the use of a Cas9/RNP complex surprisingly allows for the genetic modification of primary NK cells - in particular, the knockout of specific genes like the SOCS3 gene - without triggering procedure-associated NK cell apoptosis.
First of all, it is recognized that the alleged “unique” difficulty of genetic modification (by electroporation) in NK cells has been known in the art as disclosed in the instant specification as well as prior art (not cited). The declaration as well as the remarks addressed below argued that the claimed invention overcomes the difficulties in genetic modification of primary NK cells. While the declaration does not particularly point out how such surprising overcoming was carried out, however, as the electroporation step and the preincubation of the primary NK cells in the presence of IL-2 or expansion for 4 days in the presence of irradiated feeder cells prior to the step of electroporation are only two conditions for the claimed method, it appears these conditions provide the allegedly surprising result in genetic modification of the primary NK cells.
However, as discussed in the claim rejection, the detailed method steps are known in the art according to Daher et al. Daher et al. clearly teach the CAR expression in the primary NK cells using CRISPR/Cas9, and the method of Daher et al. teach the IL-2 preincubation, expansion of NK cells and irradiated APCs followed by electroporation (Example 1). In the presence of the evidence showing the claimed method steps taught by Daher et al., it cannot be considered that the claimed invention with regard to the procedural features (i.e. preincubation, expansion on the feeder cells and electroporation) is surprising based on the unique difficulty of genetic modification in primary NK cells.
There is no other evidence present in the declaration as well as the specification, if such surprising results are due to the transgene.
Therefore, it is the Examiner’s position that the alleged “surprising” result in genetic modification of primary NK cells utilizing the claimed method cannot be considered surprising results based on the teaching of Daher et al.
It is acknowledged that O’Dwyer discloses examples using a NK cell line and there is no example using a primary NK cells. However, as discussed in the claim rejection, O’Dwyer teaches the use of a NK cell or NK cell line, and the NK cell would be construed to encompass primary NK cells. Even if the teaching of O’Dwyer is considered to be limited to NK cell line, however, as discussed above and in the claim rejection, Daher et al. teach the method of expressing CAR in the primary NK cells using the electroporation technique along with preincubation with IL-2 and/or expansion in the presence of feeder cells. Thus, it would have been obvious to a person skilled in the art to carry out the method of O’Dwyer in the primary NK cells as shown in Daher et al. with a reasonable expectation of success.
The Remarks
Applicant's arguments filed 2/3/2026 have been fully considered but they are not persuasive.
Applicant repeatedly argued that O’Dwyer does not teach the use of “primary” NK cells and rather they utilized a secondary NK cells with a p53 mutation, i.e. KHYG-1 NK cells. The Examiner respectfully disagrees with this allegation. As discussed above in the claim rejection for clarification, while O’Dwyer does not particularly utilize the term “primary”, however, O’Dwyer clearly discloses NK cells and NK cell lines are modified (Abstract), and the NK cells modified to be more cytotoxic are either “NK cells” or “NK cell lines” (para. 90-91). It is the Examiner’s position that the teaching of “NK cell” by O’Dwyer would be reasonably interpreted as primary NK cells in culture derived from a tissue opposed to the NK cell line because if the “NK cells” of O’Dwyer are directed to cell line, there is no reason to repeat “NK cell line” in the disclosure.
Assuming arguendo even if the teaching of “NK cell” by O’Dwyer is not considered to include primary NK cells, however, the teaching of Daher et al. would overcome the deficiency as Daher et al. teach the use of primary NK cells isolated from cord blood and carried out electroporation using CRISPR/Cas9 in order to genetically modify the primary NK cells to express CAR (Example 1). Thus, the combined teachings of O’Dwyer and Daher et al. would render the claimed invention of genetically modifying primary NK cells obvious.
Regarding the assertion that one of skill in the art would not reasonably expect the method of O'Dwyer to be operable in primary NK cells referring to the declaration, it is the Examiner’s position that one skilled in the art would expect that primary NK cells would be genetically modified by using the claimed method steps as discussed above based on the teaching of Daher et al. Daher et al. teach the substantially similar method steps of genetic modification using electroporation to express CAR in the primary NK cells using CRISPR/Cas9 and preincubation steps as discussed above and in the claim rejection.
Regarding the double patenting rejection, applicant requested holding the rejection in abeyance until the Office determines there is allowable subject matter in the present application. Thus, the double patenting rejection is maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAEYOON KIM/Primary Examiner, Art Unit 1631
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